Sustainable Agriculture & Food Enterprises Pty Ltd v Samaritan Pharmaceuticals Inc

[2008] ATMO 97

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re: Opposition by Sustainable Agriculture & Food Enterprises Pty Ltd to an application under section 92 by Samaritan Pharmaceuticals, Inc.

to remove trade mark number 793333(5) – SAMARITAN - in the name of Sustainable Agriculture & Food Enterprises Pty Ltd

Delegate:

Debrett Lyons

Representation:

Applicant:  No representation

Opponent: Kevin Pullen of Aardvark Patent & Trade Mark Services

Decision:

2008 ATMO 97

Section 92(4)(b) opposition - opponent showed use of the trade mark as registered and use of the trade mark in relation to the registered goods. Opposition successful.

Applicant to pay opponent’s costs.

Background

1. Sustainable Agriculture & Food Enterprises Pty Ltd (‘SAFE’) is the owner of the trade mark number 793333 registered in class 5 in respect of “creams and lotions for medical and pharmaceutical purposes”. The trade mark is the word SAMARITAN.

2. On 31 January 2006, Samaritan Pharmaceuticals (SP) filed an application for removal of the trade mark from the register for non-use under section 92(4)(b) of the Trade Marks Act 1995 (‘the Act’).   The application was supported by a statutory declaration of Kenneth McInnes in accordance with Regulation 9.1 of the Trade Mark Regulations 1995.

3. On 23 May 2006 SAFE filed a Notice of Opposition to the removal application under section 96 of the Act. For the purposes of this decision, the only important ground of opposition to the removal application was that the trade mark had been used by the registered proprietor in respect of the goods in the relevant period.

4. The matter came before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, for hearing in Brisbane on 2 September 2008.  SP was not represented but relied on the written submissions of its patent and trade mark attorneys, Hodgkinson McInnes Patents.  SAFE was represented by Dr Kevin Pullen of Aardvark Patent & Trade Mark Services.

   The Evidence

5. There was no evidence from SP.  SAFE relied on the following declaratory statements:

   vKevin Pullen dated 21 May 2007.

   vKevin Pullen dated 21 June 2007.

   vLeslie S. J. Dyne dated 20 June 2007.

   vLeslie S.J. Dyne dated 20 June 2007.

   Submissions

6. SP based it submissions on the evidence put forward by SAFE and made two arguments.  First, that the registered trade mark had not been used, rather, a mark with substantial additions or alterations, namely, NUTRACELL SAMARITAN.  Secondly, that mark was admittedly used in respect of creams and lotions but the evidence did not show those creams and lotions to have a proven medical or pharmaceutical purpose and so the use was only in relation to class 3 goods, being creams and lotions for cosmetic purposes.

   Discussion and Reasoning 

7. Section 100 puts the onus on the trade mark owner to rebut an allegation of non-use. A section 92(4)(b) allegation is that the trade mark had been registered for a continuous period of three years ending one month before the day on which the non use application was filed and during which time there had been no use of the mark in relation to the goods covered by the registration. SAFE must therefore show that the trade mark has been used in Australia in respect of the registered goods during the relevant period. For the purposes of section 92(4)(b), the relevant three year period is 31 December 2002 to 31 December 2005.

   Use of the registered trade mark?

8. The product label used by SAFE is shown below:

9. According to section 100(3)(a), SAFE will have rebutted the allegation of non-use if it establishes use of the registered trade mark or “the trade mark with additions or alterations not substantially affecting its identity”.

10. In the case of Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd and Ors 61 IPR 242 the Federal Court was required to consider similar labelling in an infringement case under section 120 of the Act. The respondents used PRO-BIO LIVING WATERS in the face of the applicant’s trade mark registration number 812514 for LIVING WATER. The issues were whether PRO-BIO LIVING WATERS is a single trade mark or two trade marks and whether the use of LIVING WATERS was itself use as a trade mark. In that case it was said at page 247:

    Counsel for the applicant submits that the name PRO-BIO LIVING WATERS, as used by the respondents, contains two separate trade marks: PRO-BIO and LIVING WATERS. She points to the logo and submits that PRO-BIO has been deliberately created as an embellished mark on the bottles and signs, while LIVING WATERS is not so embellished. Counsel also emphasises the differences in font, style and size of the two components. She submits that PRO-BIO and LIVING WATERS perform quite distinct and separate functions, one (PRO-BIO) to identify the source of the product range. The other (LIVING WATERS) as a secondary mark in respect of the products that form part of the LIVING WATERS range of bottled water products.

    The third respondent submitted that the addition of PRO-BIO changed the structure of the name so that LIVING WATER was not being used ‘in its own right’.

    …

    In Anheuser-Busch Inc v Budejovick[yacute] Budvar, Národní Podnik 56 IPR 182 (‘Anheuser-Busch’) at [155], Allsop J considered whether the impugned mark was the whole of "Budejovick[yacute] Budvar" or its component words. His Honour observed that the mark there was composed of two foreign words, placed in close proximity to each other, written in similar script and that they received prominence on the label of equal proportion on the neck and slightly different prominence elsewhere. He concluded that the sign used to distinguish or intended to be used to distinguish the goods in the course of trade from other goods was the phrase consisting of the two words and that it would be so understood by relevant readers as a composite single mark.

    In the present case, in addition to the matters raised by counsel and referred to above, there is use of PRO-BIO with LIVING WATERS (as in the logo), without LIVING WATERS (as on the container labels) and with other phrases (as in the third logo). These different uses indicate a separate purpose for the words PRO-BIO.

    In my view, as used and as it would be understood by consumers, PRO-BIO is used to denote the company that is the origin of the range of waters collectively marketed and distinguished in the course of trade under the name LIVING WATERS. LIVING WATERS is thereby used as a separate trade mark.

    The next question is whether LIVING WATERS is descriptive, having direct reference to the character and quality of the water or whether the words appear as a trade mark for distinguishing the product of the respondents from other water products in the course of trade. A mark may have a descriptive element but still serve as a badge of trade origin (Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 (‘Johnson & Johnson’) per Lockhart J at 335 and per Gummow J at 347) and there may still be trade mark use although another trade mark or indication of origin is used in the same packaging or advertisement (Johnson & Johnson per Gummow J at 349; Pepsico per Sackville J at 179, 182 and 185). The use of descriptive words may, however, make it more difficult to establish that the words do so distinguish the product.

    The words "living waters" represent a coined phrase which cannot be said to have no direct reference to the character or quality of the goods, the water (see Mark Foy’s Limited v Davies Coop and Company Limited [1956] HCA 41; (1956) 95 CLR 190 (‘Mark Foy’s’) and the use of the expression "tub happy"). In Mark Foy’s, that did not preclude the majority of the High Court (Dixon CJ and Williams J) from concluding that there was use as a trade mark. In my view, the words "living waters" do convey a meaning but, to adapt the words of Dixon CJ at 194-195:

    ‘in ordinary English speech the words do not possess a connotation sufficiently definite to amount to a direct reference to the character or quality of the goods ... Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude ... They may have an emotive tendency, but they do not appear to me to convey any meaning or idea sufficiently tangible to amount to a direct reference to the character or quality of the goods’

    or, paraphrasing what was put by Williams J at 201, to say that water is living is in the ordinary use of English meaningless. The words contain at most a ‘covert and skilful allusion’ to the quality of the water. The words convey only a ‘vague association of ideas’. They do not have an inherent capacity to describe the water (cf Johnson v Johnson and the word "caplet").

    In support of a submission that registration of LIVING WATER as a trade mark should not have occurred, the third respondent referred me to the use of the words "living water" in the Bible and also to references to "living water" as the "essence of life". He also asserted that the respondents do not sell "living water" as a product and that a trade mark should refer to a product.

    The key question remains whether, objectively, the words are used to distinguish the bottled water as that of the respondents. Counsel for the applicant submits that, in the context of its use, LIVING WATERS primarily performs the function of a trade mark in that it acts as an identifier for a range of products that are categorised as being natural and healthy and does not act as a descriptor, as the description of each product is clearly identified on each label. The submission by the respondents that "living water" is not sold as a product is consistent with the words being used to identify the product range and not to describe the products themselves.

    In my view, LIVING WATERS is used to distinguish the bottled water products of the respondents from the bottled water products of other traders, so that it is a ‘badge of origin’ of those goods (Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2002) 54 IPR 344 at [26]). The contents of the containers, the products, are described as, for example "spring water" or "water of life".

    It follows that, in my opinion, LIVING WATERS as used is not a descriptor but a trade mark.

11. There are direct parallels with the present case.  The evidence shows that SAFE uses NUTRACELL as its “house” trade mark.  It is used, in word form and in the bunting style shown above, in relation to many of SAFE’s products.  Enough, I find, to say that two trade marks, NUTRACELL and SAMARITAN, are used in relation to the product (see also George Weston Foods Ltd v Manildra Flour Mills Pty Ltd (1999) 47 IPR 145).

    Use in relation to the registered goods?

12. As a rule, proof of use of the trade mark on goods other than those for which the trade mark is registered will not rebut an allegation of non-use.  That was not the case under the Trade Marks Act 1955 which by its section 23(2)(a) allowed for qualifying use of the trade mark on goods of the same description.  A similar concession can, since the Trade Marks Amendment Act 2006, be found in section 101(4) of the current Act, but now exists in relation to exercise of the registrar’s discretionary powers.

13. In its written submissions, SP includes the following definitions:

    Macquarie Dictionary – “medical” – pertaining to the science or practice of medicine.

    Compact Oxford Dictionary – “medical” – relating to the science or practice of medicine.

    Macquarie Dictionary – “pharmaceutical” – pertaining to pharmacy or an item especially a medicine sold at a pharmacy.

    Cambridge Advance Learner Dictionary – “pharmaceutical” –connected with the production of medicines and a medicine.

14. SP submitted that “[T]here are other entries for the definition (sic.) in other dictionaries but to avoid repetition these are not mentioned”.  Leaving to one side the observation that, had the relevant dictionary extracts even been included, this is unserved evidence and not legal submission, it is plain that whilst repetition might have been avoided, so too has completeness.  The Macquarie Dictionary (4^th edition), for example, goes on to define “medical” as “curative, medicinal, therapeutic” and the Oxford Dictionary further defines “medical” as “pertaining to the healing art or its professors”. 

15. The evidence clearly shows that SAFE is in the business of producing therapeutic products.  The product range includes dietary, herbal and vitamin supplements, homoeopathic and aromatherapy products – goods which are now collectively referred to as 'complementary medicines'.

16. Goods bearing the trade mark are promoted for their use on dry or damaged skin.  There are customer testimonials to a range of benefits from use of the product.  The goods are the types of goods which might be found in a pharmacy.  At their broadest, the goods are in my opinion creams and lotions for medical and pharmaceutical purposes.

17. Nevertheless, SP’s submission is that for the use to qualify under section 100, there must be proof that the goods have proven medical or pharmaceutical efficacy. I can see nothing in the Act or in the case law which requires that. SP submitted that for the use to be in relation to the registered goods, the goods would need to be listed on the Australian register of therapeutic goods established under the Therapeutic Goods Act 1989.  It may or may not be the case that the goods should be registered with the TGA, however I do not consider the answer to that question as determinative of whether the trade mark has been used on goods which can be properly described as creams and lotions for medical and pharmaceutical purposes.

18. I can see no reason that SAFE has not used the trade mark in relation to the goods for which it is registered and accordingly, the opposition is successful.

Registrar’s discretion

1. Were I wrong in any of these findings, I would nonetheless consider it a proper exercise of the Registrar’s discretion under section 101(3) to rule that the trade mark should, in any event, remain on the register (see Figgins Holdings Pty Ltd v Beltrami SpA (1998) 46 IPR 411).

   Decision

2. Trade mark registration 793333 is to remain on the register.  In the event of an appeal from this decision, removal shall not occur until a court makes orders to that effect.

   Costs

3. I order that the applicant for removal pay the opponent’s costs according to the official scale.

   Debrett Lyons

   Hearing Officer

   Trade Marks Hearings

   8 December 2008